Louis J. Hoffman about Jerome H Lemelson's Patents

Subject: Lemelson: Stick to the facts

From: ljh@PatentIt.com (Louis J. Hoffman)

Date: 1996/04/04 Message-Id: <ljh-0404961804080001@p55138.syspac.com>

Newsgroups: misc.int-property

As a patent attorney who represents Mr. Lemelson (as well as many other clients), I have been reading the "back and forth" between the pro-inventor and anti-Lemelson camps with interest and amusement. I have found the discussions of Jerry Lemelson largely uninformed. I have finally decided to weigh in with my personal opinion (not that of Mr.Lemelson or anyone else), based on facts that I have gleaned by working onsome of these matters.

The key to the attacks on Mr. Lemelson as a "submarine inventor" appears to stem from the view that Mr. Lemelson INTENTIONALLY decided to file case after case with the hope of writing claims later that would cover commercially important products. As Mr. Bell put it in one recent message: "Mr. Lemelson kept these {which ones, Mr. Bell doesn't say}patent applications, divisionals, continuations, and continuation-in-parts alive for over three decades", an act of supreme faith, in my humbleopinion, in an era when patents weren't worth beans. 

Hasn't it crossed anyone's mind how unlikely it would have been for someone to have decided to implement that strategy? Put yourself in the shoes of a young inventor in his thirties with limited financial resources and facing a hostile patent law system. Would you be likely to reason:

"The patent system is going to get better when the law changes to form a court called the "Federal Circuit", and I will spend lots of money and effort filing continuation after continuation on the off chance that I will strike it rich when I'm in my seventies. I'll ignore the risk that my inventions will be uncovered for decades, and the risk that technology will pass my invention by."

Is that really logical? Was Mr. Lemelson somehow more farsighted about changes in the law and future developments in technology than the rest of inventors of his era? If   he were, I imagine there would have been an easier route to wealth than planning patent litigation thirty years in advance.

So, if there was not intentional delay, what happened?

When you STUDY the criticized Lemelson file histories, it is hard to miss the PTO-caused delay. Eight-way restriction requirements, multi-year interferences, years between office actions, and half-decades waiting for Board of Appeals decisions can all be found in these files. I have also seen several other inventions with similarly lengthy   chains,² including some at big companies.

Also, those who criticize Lemelson long-pending cases should know thatonly a few have been delayed so extremely. Most of Lemelson's applications issued with ordinary promptness. Recall that Lemelson has nearly 500 US patents, and only a few have extended file histories. Commissioner Lehman accused him of having about 30.

So why has Mr. Lemelson obtained even those few patents with such long histories? The answer, I believe, is that Mr. Lemelson has a stubborn streak and does not intolerate injustice. Thus, he will try and try again when most inventors would quit banging heads against a wall and let the application go abandoned.

In the much-criticized "machine vision" line, for example, the PTOissued three consecutive Board of Appeals decisions in three consecutivecases, the third of which proved Mr. Lemelson correct all along. Thethree cases took from 1956 through 1978 because of lengthy delays by the PTO, principally at the Board. Had the examiner not been so hostile, and so wrong, at first, the patents would have issued far sooner.

I also noticed a recent question about Petitions to Make Special. I have filed many petitions to make special for Lemelson, in virtually all of his applications in fact (so much for intentional delay), and I too have found mixed results. In some cases, I have had applications delayed for the petitions to be decided and received a grant of the petition after a year, by which time an ordinary application would have been decided. Onthe other hand, I have had patents go from soup to nuts in a year, including printing, because of a petition. It is indeed important to follow up.

I am disturbed greatly about the tone of the "debate." Mr. Lemelson is a personally nice man who has an extremely inventive mind. The notion that, as Mr. Hayden puts it, that "he didn't really invent anything, just finally got a good patent attorney to scam the system with" -- while flattering to those of us who represent him -- is hardly likely to be trueof any person who has obtained nearly 500 patents. Maybe one or two oreven ten might be mistakes that should never have been issued, but all 500? Come on.

It appears that some of those who attack Lemelson do not like the fact that he does not do development, in general (rjriley note: reference is primarily to Bruce Hayden). There is nothing wrong with making inventions only in "paper patents",   which others are free to readand use in making subsequent advancements. This is the Constitutionalidea. Actually, Mr. Lemelson is indeed now funding development or exclusively licensing some of his inventions for others to develop. Most inventors cannot afford this, though, and find it difficult to get others to fund development.

Perhaps the severity of Mr. Hayden¹s invective arises from the fact thatMr. Lemelson was in bitter litigation with Mr. Hayden's employer, Motorola, Inc., although Mr. Hayden has not (to my knowledge) revealed that fact. (By the way, Motorola settled with Mr. Lemelson not only by taking a license but also by supporting his programs, which indicates that his employer does not share his views.) Perhaps, on the other hand, those who attack Mr. Lemelson are only jealous of his money. An attorney for another company who Lemelson has asked for a license, Data General, Mr. Lewine, writes, "I would love to have any first hand data of someone who approached Lemelson and wanted to license any Lemelson patent for future product use".  I suppose Mr. Lewine thinks that such never happens. Yes, Mr. Lewine, I have personally handled such instances. I have also read over 100 volumes of Mr. Lemelson's inventors notebooks, which contain records of   hundreds of meetings in which Mr.Lemelson tirelessly "shopped" his inventions to big and small companies. A few of those efforts met with success, but most often Lemelson was met with the "NIH" syndrome that inventors often face. In some instances, Mr. Lemelson met with rejection only to have his ideas ripped off later.

Perhaps, Mr. Lewine, you can lead the effort at your company to "mine" the inventions of independent inventors for the gold they contain, ratherthan participating in efforts to find excuses to use inventions for free. To be clear, I am not accusing you of doing such at DG -- I have nopersonal knowledge of your role. But it is indeed my view that big companies have little interest in attempting to obtain patent rights from independent inventors, and in my view that is a shame and a loss to the economy.

In some sense, the most disturbing part of the attacks on Mr. Lemelson is that his  "example of abuse" is being cited -- principally by those who do not know the facts of the particular applications or why they took so long to issue -- as justification for making damaging changes to the patent system, which will harm all inventors. If only those who criticize "submarine patents" were more diligent in rooting out and fixing problems in the PTO that cause extreme delay in these sorts of cases. Maybe we should start a thread swapping "war stories" about bad PTO delays and forward it to the PTO.

Mr. Lemelson should neither be lionized nor demonized. The value of his contribution to technical advancement will be judged historically. Until then, can we at least resolve to stick to facts rather than perpetuating myths?

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